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2 February 2018Trademarks

EU court rules on wineries battle

The European General Court ruled on a trademark battle between two wine companies yesterday, February 1.

In November 2013, Italian wine company Cantina e oleificio sociale di San Marzano applied for an EU trademark. The trademark is a figurative sign made up of the word ‘Santoro’ on a black background, underneath an abstract tree, covering class 33 (alcoholic beverages).

But the following year, Spanish wine company Miguel Torres filed a notice of opposition, taking issue with the ‘Toro’ part of Cantina’s applied-for trademark. ‘Toro’ translates from Spanish and Italian into ‘Bull’ in English.

Miguel Torres owns the trademark ‘Sangre de Toro’, which translates into ‘Bull blood’. The Spanish wine by Baccus, the Roman god of wine, known in ancient times as 'Son of the Bull'. Goods for the mark also fall under class 33.

Cantina requested a restriction on the list of goods to ‘Italian wines’ in August 2014, which was accepted by the European Union Intellectual Property Office ( EUIPO). The EUIPO’s Opposition Division then rejected Miguel Torres’s opposition to the trademark.

However, in December 2016, the EUIPO’s Second Board of Appeal upheld Miguel Torres’s appeal, claiming that “in light of the identical nature of the goods and the similarity of the signs”, there was a likelihood of confusion.

Cantina appealed against the decision to the General Court, arguing that the goods at issue were identical and alleging that Miguel Torres’ trademark only covered Spanish wines, not the entire category of alcoholic beverages.

According to Cantina, the goods covered by the earlier mark are “so dissimilar on account of their origin, their method of production, the grape variety used, the distribution channels and the geographical indications”, that the applied-for trademark was unlikely to cause confusion.

The General Court disagreed with this assessment and said that the Board of Appeal was right to find that the goods were identical and that the signs were likely to cause confusion with the public.

“Having regard to the fact that the goods are identical, the average level of attention of the relevant public, the fact that the signs are phonetically similar and, to a lesser extent, visually similar” meant that there was a risk of confusion, said the General Court.

Cantina was ordered to pay the costs of the appeal and the General Court dismissed the action.

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